How ZIPLOC came undone – a cautionary tale on admissible evidence

A recent decision of the Assistant Commissioner of Trade Marks in New Zealand has demonstrated the importance of ensuring that all evidence is in an admissible form, continuing a line of recent decisions in which the Assistant Commissioner has ruled evidence to be inadmissible in trade mark proceedings.

S.C. Johnson & Son, Inc applied to revoke International Consolidated Business Pty Limited’s (“ICB”) New Zealand trade mark registration No. 648953 ZIPLOC on the basis of non-use. To defeat the action, ICB needed to demonstrate that it had made genuine use of the ZIPLOC mark during the period 22 March 2010-22 March 2013 in relation to the registered goods.

ICB filed two Declarations to demonstrate that the ZIPLOC mark had been used during that period. However the Assistant Commissioner ruled that much of the leading declaration and all of the second supporting Declaration were inadmissible, reinforcing that evidence will be much more closely scrutinised in New Zealand proceedings than in corresponding Australian proceedings.

Inadmissible Evidence in ZIPLOC’s trade mark proceeding declarations

The first Declaration was from a director of ICB and included accounts from a wholesaler which recorded sales of the ZIPLOC product during the Relevant Period. However the Declaration did not explain how the Declarant obtained knowledge of this evidence or why the wholesaler did not itself provide direct evidence. The information was therefore considered to be outside the deponent’s personal knowledge and dismissed as inadmissible hearsay.

The second declaration was from ICB’s Australian lawyer and asserted that the ZIPLOC mark remained an ongoing part of ICB’s business plans in New Zealand. It also provided evidence of the importation of ZIPLOC marked products from a company within the ICB group of companies to a wholesale company in New Zealand and subsequent distribution by the wholesaler to other companies for consumer purchase.

Whilst the second Declaration asserted that the contents of the Declaration were from the Declarant’s “own personal knowledge save where otherwise stated”, the Assistant Commissioner did not accept that the Declarant would have personal knowledge of the business plans, or knowledge of ICB’s importation and distribution activities. As the Declaration provided no other explanation as to how this knowledge was obtained, the Declaration and its exhibits were also deemed to be inadmissible.

Assistant Commissioner in favour of revoking the ZIPLOC trade mark

Due to the inadmissibility of most of the evidence, the Assistant Commissioner concluded that she was unable to deduce reliable narrative relating to the alleged importation or sale of the ZIPLOC branded products in New Zealand. Accordingly ICB did not discharge its onus of proving it had made “genuine use” of the ZIPLOC mark during the Relevant Period and S.C. Johnson was successful in revoking the ZIPLOC mark.

Did this bring a Different Outcome on Appeal?

As Appeals in New Zealand are not de novo hearings, an appeal court will consider the same evidence as that provided to the Assistant Commissioner. It seems likely that any appeal of this decision would reach the same result as that of the Assistant Commissioner, especially as much turned on the rules of evidence and which an appeal court would apply with at least as much vigour as the Assistant Commissioner.

Take Home Points for trade mark owners – Get Your Evidence Right

The admissibility of evidence will be much more closely scrutinised in New Zealand proceedings than in corresponding Australian proceedings. Furthermore as Appeals from the New Zealand Assistant Commissioner of Trade Marks decision are not de novo, an unsuccessful party in a New Zealand proceeding will not be given another opportunity to “correct” poor evidence. As such it is critical to ensure that evidence lodged in New Zealand trade mark proceedings is drafted carefully to ensure that it complies with the appropriate rules of evidence and is in an admissible format. This includes ensuring that the Deponent has direct knowledge of the facts to which he/she is attesting. If any statements in a Declaration are outside the Declarant’s personal knowledge, there must be a clear explanation as to how the facts attested in the Declarations have been acquired by the Deponent.